WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Easigrass Holdings Limited v. Tori Weir, The Fake Grass People

Case No. D2012-1247

1. The Parties

The Complainant is Easigrass Holdings Limited, London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Silverman Sherliker LLP, United Kingdom.

The Respondents are Tori Weir, The Fake Grass People both of Newtownards, Northern Ireland, United Kingdom.

2. The Domain Names and Registrars

The disputed domain names <easygrassni.com> and <easigrassni.com> (the “Domain Names”) are registered with Melbourne IT Ltd and Register.IT SPA.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2012. On June 19, 2012, the Center transmitted by email a request for registrar verification in connection with the Domain Names. On June 20, 2012, Melbourne IT Ltd. and Register.IT SPA transmitted by email to the Center their verification responses confirming that the Respondents are listed as the registrants and providing the contact details

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on June 22, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 12, 2012. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on July 13, 2012.

The Center appointed Ian Lowe as the sole panelist in this matter on July 31, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

According to the WhoIs records available, the Domain Names are registered in the names of two different registrants. The Domain Name <easygrassni.com> (the “Y Domain Name) is registered in the name of Tori Weir and the Domain Name <easigrassni.com> (the “I Domain Name”) is registered in the name of The Fake Grass People. However, as appears below, the two registrants have the same address and the Panel is satisfied that The Fake Grass People is a trading name of a business carried on by Tori Weir. Accordingly, the Panel finds that this single Complaint against two Respondents in respect of the Domain Names is properly admissible and treated as a Complaint against a single Respondent.

4. Factual Background

Unhelpfully, the Complaint does not give any explicit information as to the business of the Complainant. However, it gives some clues. It is the owner of a number of registered trademarks in respect of EASIGRASS, including United Kingdom trademark No. 2135911 EASIGRASS, registered as of June 14, 1997 and Community Trademark No. 10500213 for the stylised word “easigrass” registered as of July 24, 2008. The trademarks are registered in respect of goods and services relating to fake grass, artificial turf, building materials used for surface coverings, and floor and ground coverings.

The Complainant has used the EASIGRASS mark in connection with its services since at least 1996 and has consistently traded across the United Kingdom and elsewhere since that time under the mark.

The Y Domain Name was registered on March 21, 2008 by Tori Weir. At the date of the Complaint it resolved to a web page at “www.thefakegrasspeople.com”, briefly describing the business of The Fake Grass People in providing a range of artificial grass surfaces together with the statement “website launching soon” and giving contact details comprising a telephone number and an email address.

On March 14, 2012, in response to correspondence complaining about her continuing to trade under the name “EasygrassNI” and owning the Y Domain Name, Tori Weir sent an email to the representative of the Complainant stating that with immediate effect she would no longer trade as “EasygrassNI”. She also stated that she had never used “easigrass” as a way of advertising or tried to piggyback on that trademark to gain advantage.

On the same day, The Fake Grass People registered the I Domain Name. At the date of the Complaint, the I Domain Name did not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Names are confusingly similar to its EASIGRASS trademarks and further that the Respondent has no rights or legitimate interests in respect of the Domain Names.

Finally, the Complainant contends that the Domain Names were registered and are being used in bad faith. The Complainant submits that the Respondent has used the Y Domain Name to disrupt the business of the Complainant by confusing customers and make commercial gain by benefiting from the Complainant’s reputation and goodwill in its trademarks. It submits that Tori Weir, having stated in her email of March 14, 2012, that she no longer intended to trade using the name “EasygrassNI”, had continued to use the Y Domain Name to divert Internet users to her website at “www.thefakegrasspeople.com” and this is bad faith use.

The Complainant’s position is that the registration of the I Domain Name on the same day as Tori Weir’s email of March 14, 2012 claiming that she would no longer trade using "EasygrassNI" indicates threatened bad faith use of the I Domain Name for the same purpose.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names the Complainant must prove that:

(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and

(iii) the Domain Names have been registered in bad faith and are being used in bad faith.

A. Identical or Confusingly Similar

The Y Domain Name comprises the word “easygrass” together with the letters “ni”. “NI” is the abbreviation and postal designation for Northern Ireland which is part of the United Kingdom. It does not detract from the distinctiveness of “easygrass” which is identical to the Complainant’s trademark EASIGRASS save for the substitution of “Y” for “I”. “Easygrass” is phonetically identical to EASIGRASS. Accordingly, the Panel finds that the Y Domain Name is confusingly similar to the Complainant’s trademark.

By similar reasoning, the Panel finds that the I Domain Name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent is a competitor of the Complainant carrying on business under the name The Fake Grass People. According to The Fake Grass People’s web page, it has been in the landscaping business for over 25 years. The Complainant has been trading under the name Easigrass since 1996 and established the name some 12 years before the Respondent registered the Y Domain Name.

In her email dated March 14, 2012, Tori Weir states that she had intended to rebrand her business (presumably to “EasygrassNI”) for some considerable time but gives no explanation as to why she wished to do so. As stated above, she goes on to say that from March 14, 2012 she will no longer trade as “EasygrassNI”. She gives no indication of what possible rights or legitimate interests she may have had in a name substantially identical to the name of her competitor.

As paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") states, the consensus view is that once a complainant makes out a prima facie case on this element then the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the Respondent had some justification for registering the Y Domain Name then she would have been expected to come forward with an explanation or to indicate it in her email of March 14, 2012. The Respondent has chosen not to answer the Complainant’s case or to respond to the allegations made in the Complaint.

Accordingly, the Panel considers that the Respondent is most likely to have registered the Y Domain Name with a view to commercial gain by taking advantage of the Complainant’s rights and goodwill in its EASIGRASS trademark and that she has no rights or legitimate interests in the Y Domain Name.

For the same reasons, the Panel considers that the Respondent has no rights or legitimate interests in the I Domain Name, particularly given the circumstances in which it was registered on the same day that Tori Weir sent an email to the Complainant’s representative stating that she no longer intended to trade under the name “EasygrassNI”.

C. Registered and Used in Bad Faith

For the reasons set out above, and in the absence of any legitimate interests in the Y Domain Name, the Panel considers it very likely that the Respondent had in mind the trademark of its long-established competitor at the time it registered the Y Domain Name; and that it registered it and has used it with a view to commercial gain by taking advantage of the Complainant's rights in its EASIGRASS trademark as the Y Domain Name is confusingly similar to EASYGRASS. No other explanation is seemingly plausible. Accordingly, the Panel finds that the Respondent registered and has used the Y Domain Name in bad faith.

In circumstances where the Respondent registered the I Domain Name on the same day as asserting in an email to the representative of the Complainant that it no longer intended to trade using “EasygrassNI”, it is inconceivable that the Respondent did not have in mind the Complainant's trademark when registering the I Domain Name. In such circumstances, the Panel also finds that the Respondent registered and is using the I Domain Name in bad faith. Passive use is sufficient in these circumstances, not least given the inherent threat from such a registration in light of the Respondent's dealings with the Y Domain Name.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <easygrassni.com> and <easigrassni.com> be transferred to the Complainant.